Ex Parte Saadat et al

Patent Trial and Appeal Board

Feb 11, 2013

10824936 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/824,936 04/14/2004 Vahid Saadat USGINZ00700 7289
7590 02/12/2013
USGI Medical, Inc.
1140 Calle Cordillera
San Clemente, CA 92673
EXAMINER
KASZTEJNA, MATTHEW JOHN
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
02/12/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte VAHID SAADAT, DESMOND BIRKETT, CHRIS ROTHE,
and TRACY MAAHS
__________

Appeal 2011-006676
Application 10/824,936
Technology Center 3700
__________

Before ERICA A. FRANKLIN, JACQUELINE WRIGHT BONILLA, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
apparatus for obtaining endoluminal access. The Examiner has rejected the
claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

Appeal 2011-006676
Application 10/824,936

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STATEMENT OF THE CASE
Claims 1, 2, 5-9, 19, 23, 24, 26, 27, 29-33, 36-38, 40-43 and 65-77 are
on appeal. Independent claims 1, 31 and 65 are representative and read as
follows (emphasis added):
1. Apparatus for obtaining endoluminal access, the apparatus
comprising:
an elongate body having a working axis and a distal
region, the elongate body configured for insertion within a body
lumen and comprising a plurality of links and at least one
tensioning wire whereby said elongate body has a first,
substantially flexible state and a second, substantially rigid
state;
at least two working lumens extending through the
elongate body;
at least one articulating element disposed near or at the
distal region of the elongate body and pivotally connected to
the elongate body near or at its distal region by a linkage
member pivotally connected to a first hinge on the articulating
element and a second hinge on the elongate body,
wherein the articulating element articulates from an in-
line position to an off-axis position relative to the working axis
of the elongate body, and
wherein a distal opening of at least one of the working
lumens is substantially covered by the articulating element in
the in-line position and is substantially uncovered by the
articulating element in the off-axis position.

31. A method for obtaining endoluminal access, the method
comprising:
advancing an elongate body having at least one
articulatable element disposed near or at a distal region thereof
into a body lumen;
moving the articulatable element from a position in-line
with or adjacent to a working axis of the elongate body to a
position out-of-line with the working axis, thereby at least
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substantially exposing a distal opening of a working lumen
provided in the elongate body; and
passing a diagnostic or therapeutic tool through the
working lumen while the articulatable element is maintained in
the out-of-line position.

65. Apparatus for obtaining endoluminal access, the
apparatus comprising:
a substantially flexible elongate body having a working
axis and a distal region, the elongate body configured for
insertion within a body lumen;
at least two working lumens extending through the
elongate body;
at least one articulating element disposed near or at the
distal region of the elongate body and pivotally connected to
the elongate body near or at its distal region by a linkage
member pivotally connected to a first hinge on the articulating
element and a second hinge on the elongate body,
wherein the at least one articulating element articulates
from an in-line position to an off-axis position relative to the
working axis of the elongate body, and
wherein a distal opening of at least one of the working
lumens is substantially covered by the at least one articulating
element in the in-line position and is substantially uncovered by
the at least one articulating element in the off-axis position.

The claims stand rejected as follows:
Claims 31-33, 36-38, 40-43, and 65-77 are patentable under 35
U.S.C. § 102(e) over Khalili.
1

Claims 1-2, 5-9, 19, 23-24, 26-27 and 29-30 are patentable under
35 U.S.C. § 103(a) over the combination of Khalili and Zehel.
2

1
Khalili et al., US 2005/0096502, published May 5, 2005.
2
Zehel et al., US 5,251,611, issued Oct. 12, 1993.
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Issue
The same issue is dispositive for all of the rejections. The Examiner
finds that Khalili discloses the disputed element of a “working lumen,”
where “the term „working lumen‟, may be interpreted as being a fixed
camera, as the CCD itself is a „working‟ element that is provided within a
lumen” (Ans. 11, citing Figure 13B, element 330, of Khalili).
Appellants contend as follows:
The recitation in each of the claims of “a working
lumen”... refers to an open space(s), channel(s), or conduit(s) to
be used for passage of diagnostic or therapeutic tools
therethrough. This interpretation is supported by Appellants‟
specification, which consistently uses the terms to refer to such
a structure. (See, e.g., ¶ 0002: “The elongate body may also
include a working lumen to facilitate passage of diagnostic or
therapeutic tools therethrough, or for injection of fluids or to
draw suction.”
...
[E]ven if a subassembly of the Khalili device included at one
time (e.g., during assembly) a conduit or channel that would
constitute a “working lumen,” the body of the camera 330 is
installed in the conduit or channel, and there is therefore no
longer a “working lumen” as claimed.

(App. Br. 13 and 14.)
The issue presented is: Does the evidence of record support the
Examiner‟s findings that Khalili discloses “at least two working lumens” or
“passing a diagnostic or therapeutic tool through the working lumen” as
required by the claims?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
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FF1. The Specification discloses as follows: “The elongate body may
also include a working lumen to facilitate passage of diagnostic or
therapeutic tools therethrough, or for injection of fluids or to draw suction”
(Specification 1, ¶ [0002]).
FF2. Khalili discloses robotic surgical device where “a camera 330
may be provided at the interface region where the leaflets connect to the
body of the device” (Khalili 8, ¶ [0079]).
Principles of Law
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). However, a claim element cannot be
interpreted so broadly so as to read the limitation out of the claim. See Texas
Instr. Inc. v. United States Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed.
Cir. 1993) (Claim language cannot be mere surplusage. An express
limitation cannot be read out of the claim). Further, claim terms are not
interpreted in a vacuum, devoid of the context of the claim as a whole.
Analysis
We agree with Appellants. The evidence of record fails to establish
that a “working” camera fixed within the interior of a device assembly (FF2)
would have been understood by a person of ordinary skill in the art to be a
“working lumen” (see, e.g., Ans. 11). Rather, a broadest reasonable
interpretation of the phrase “working lumen” in light of the Specification is
consistent with the Appellants‟ view that a “working lumen” is a lumen
capable of facilitating the passage of tools (FF1; see also, App. Br. 13). An
occupied channel or cavity would not be capable of this function.
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Furthermore, independent claim 31 defines a method for obtaining
endoluminal access requiring “passing a diagnostic or therapeutic tool
through the working lumen.” We find that the Examiner‟s claim
interpretation reads this element out of the claim (see, e.g., Ans. 11). The
Examiner has not established that a skilled worker would have recognized
that Khalili discloses a method for obtaining endoluminal access requiring
passing a diagnostic or therapeutic tool through the working lumen as
required by claim 31. For example, the Examiner has not adequately
explained how disclosing the robot arm(s) as shown in Figures 15 and 16 in
Khalili describes a step of passing a tool through a working lumen (Ans. 5,
12-13; see also Khalili [0082]-[0083]).
Regarding claim 65, as Appellants point out, “camera 330” in
Khalili‟s apparatus is not a “working lumen” as recited in independent
claims (App. Br. 14). The Examiner therefore fails to establish by a
preponderance of the evidence that this reference describes or suggests “at
least two working lumens” by referring to “330, 332” in Khalili (Ans. 4).
The Examiner has not established that a skilled worker would have
recognized that Khalili discloses an apparatus having at least two working
lumens as required by claim 65. Khalili fails to anticipate claims 31, 65 and
dependent claims thereto.
The rejection for obviousness relies on the Examiner‟s same findings
that Khalili discloses at least two working lumens (Ans. 7-8), and therefore
suffers from the same deficiency. The Examiner fails to establish by a
preponderance of the evidence that this reference describes or suggests “at
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least two working lumens” as required in independent claim 1 and dependent
claims thereto.

SUMMARY
We reverse all of the rejections on appeal.

REVERSED

cdc